recent decision of the Canadian Trade-marks Opposition Board raised some novel issues surrounding the types of evidence required to be filed and the categories of wares that might raise a likelihood of confusion. The decision raises issues of concern for those involved in the fashion industry and provides lessons regarding the evidence required in order to succeed in a Canadian opposition proceeding.
The case of Advance Magazine Publishers Inc. v. Beauty Bank Inc. (2010), 89 CPR (4th) 264 saw Advance Magazine Publishers Inc. oppose an application for the trade-mark GLAMOURAZZI that was filed by Beauty Bank Inc. Beauty Bank’s trade-mark application covered a broad range of cosmetic and fragrance-type goods. Advance based its opposition primarily upon the basis that the GLAMOURAZZI mark was not registrable since it was confusingly similar to the trade-mark GLAMOUR which had been previously registered in association with, among other things, a periodical magazine. While Advance claimed some technical grounds of opposition, the following were the substantive grounds relied upon by Advance:
- Beauty Bank was not entitled to register the GLAMOURAZZI mark since it was confusing with the GLAMOUR mark that had previously been used in Canada.
- Beauty Bank’s alleged mark was not registrable since it was confusingly similar with the trade-mark GLAMOUR that had previously been registered in Canada by Advance.
- The GLAMOURAZZI mark was not distinctive (and could not be properly registered) given the prior use of the trade-mark GLAMOUR by Advance.
Hearing Officer Sprung correctly indicated that the Opponent had to meet an initial burden by adducing sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition actually existed.
With respect to the allegation that the GLAMOURAZZI mark was not entitled to be registered, the Hearing Officer noted that Advance had the initial responsibility to show that its mark had been used in Canada prior to the filing date of the GLAMOURAZZI mark. In an interesting strategic move, Advance did not file any evidence to show use of its trade-mark in Canada. Rather, Advance argued that the Federal Court of Canada had determined in a 2009 decision that the GLAMOUR mark had, in fact, been used in Canada. In addressing this assertion, the Hearing Officer noted that this was an unreasonable approach to take since it would prejudice Beauty Bank in the proceeding since Beauty Bank would be unable to respond to such evidence and since the veracity of such evidence could not be tested by cross-examination. As a result of this finding, the Hearing Officer determined that the ‘entitlement’ ground of opposition must fail.
Turning to the argument that the GLAMOURAZZI mark was not ‘registrable’ because it was confusing with the previous registrations obtained by Advance, the Hearing Officer determined that Advance had met its initial onus by filing particulars of its registrations for the trade-mark GLAMOUR. As a result, the onus in the proceeding shifted to Beauty Bank to convince the Hearing Officer that there was no likelihood of confusion between the GLAMOURAZZI and GLAMOUR marks. In determining that there was no likelihood of confusion, the Hearing Officer determined that the GLAMOUR trade-mark was not inherently strong and that, as a result of the filing of no evidence of use, she could not determine that the mark had acquired distinctiveness in Canada. On the other hand, the Hearing Officer determined that the GLAMOURAZZI mark had some inherent distinctiveness since it is a coined term and since the addition of the element “azzi” created a relationship with the word and idea of “paparazzi” which was determined to be quite different from the word “glamour” alone.
The Hearing Officer also addressed Advanced’s argument that there was an overlap in the wares and trade of the parties since both were involved in a commercial endeavour associated with beauty and a “culture of glamour”. The Hearing Officer, however, was not prepared to find that there would necessarily be an overlap with all types of products related to beauty. While the Hearing Officer might have been prepared to assume that both parties’ goods were sold in the same type of retail stores (no actual evidence was actually filed on that issue), there was no basis for finding that the goods would be sold in the same sections or in close proximity to each other.
In concluding, the Hearing Officer determined that there was no likelihood of confusion in this case and dismissed the opposition.
There are lessons that brand owners can take from this decision. In short, there is a possibility that the Hearing Officer might have come to a different conclusion had clear evidence showing use of the trade-mark GLAMOUR been filed. In a typical Canadian opposition proceeding, the evidence filed by the opponent is critical in securing a finding of confusion. This decision (while not binding on a Canadian Court) certainly suggests that relying upon a previous finding of ‘use’ of a trade-mark in Canada will not suffice. While this puts an opponent to the additional task and expense of collecting and filing clear evidence, it is a worthwhile endeavour to undertake when opposition decisions can have a clear impact upon strategic business decisions.